Patent Claim Counts

When judging infringement of a patent and the patent’s validity, we do not look to the patent as a whole but rather to the individual patent claims. To win its case, a patentee need only find one claim that threads that needle of being both infringed and valid (and otherwise enforceable). Because it is often difficult to predict which claim fits that mold, most patent attorneys believe that more claims are generally better than fewer claims. However, despite the potential added value of extra claims, fewer and fewer patentees are seeking those extra claims.

The chart below offers a time-series of the percentage of US utility patents that are “Jumbo” – with >20, >30, or >40 patent claims and grouped by patent issuance year. You’ll note that the rates are falling. Three reasons – (1) increased fees that began in 2004 for these extra claims; (2) more aggressive USPTO restriction practice; and a greater number of internationalized cases that involve high extra-claim-fees in other jurisdictions.

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17 thoughts on “Patent Claim Counts”

As a practical matter, the unreasonable approach to restriction by the Office drives my decision to file no more than 20 claims, at least in the application as filed and before I determine whether the examiner is reasonable. I don’t know to what extent that is due to examiners being administratively penalized for examining applications with a lot of claims, or administratively rewarded for imposing a restriction. The fact that some examiners have issued a 20-way restriction requirement against 20 claims (which I have seen more than once) suggests that there is abuse of that discretionary tool in the examining corps. While I have been successful in getting those abusive restriction requirements withdrawn by petitioning the director, there is still much abuse in the range of 2 and 3 way restriction requirements with only 20 claims – so why file more when that can cost as much as or more in excess claim fees than a continuation/divisional, at least up front? Add in the examination delay that is incurred when an examiner unreasonably imposes a restriction requirement and the director unreasonably upholds it, and it is generally not a good idea to file more than 20 claims in the application at filing. As far as I can tell, the PTO is not incentivized to reduce the number of patents that are issued by allowing an applicant to claim the invention as well as possible, and instead wants to issue as many patents as possible to increase maintenance fee revenue. And it is a much better argument to the jury that an infringer is infringing 10 patents with 20 claims each than 1 patent with 200 claims.

Karl, with your jury comment you give me an idea. Do the big corporations X, Y and Z cross-licence each other? And if they do, does it help those who negotiate on behalf of Corporation X that it has more patents in its pile than do either of Y and Z?

One might almost fantasize that some Applicants deliberately encourage USPTO restriction requirements.

All jurisdictions require that each patent application be directed to just one inventive concept. But jurisdictions vary as to the extent to which a plurality of independent claims can all be directed to the same single inventive concept.

Setting aside the issue of several independent claims each in a different claim “category” (apparatus, process, product) the interesting bit is how many independent claims to allow that are in one and the same category. In parts of the world where attention is on the substance rather than the form, it is so, that when people see a plurality of independent claims in the same category, this is a prima facie indication of obfuscation. The claim drafter is EITHER using different word clusters to define the SAME inventive concept (which obscures the scope of protection) OR is using different words to define different inventions (which is not allowed).

Who remembers the experiment performed for 11 year olds in basic physics classes, in which threee light beams are shone onto a white board. Each beam is in a different one of the three Primary Colours. Only where all three beams coincide is there White Light. So it is with three Independent Claims. You think you have expanded the scope of protection but what you might instead have done is covered for your client only the white spot in the middle, the small area covered by all three of your fancy independent claims.

Restriction practice is a mystery to me. On that, I defer to others.

As to claims fees, I suspect that years of coughing up heavy official fees for every claim in excess of 15 has had a progressive ratcheting down effect on the mindset of those who draft claims, at least those who file internationally.

Max, a lot of applications disclose multiple inventions. They all should be claimed on filing thereafter receiving restrictions which provide legal benefits under 35 USC 121.

The Office also restricts between combinations and sub-combinations and between claims in different classes before searching — that is, before identifying a common novel feature. What this does, I think, is spread the very same invention among several patents allowing separate royalties on the same invention, and potentially allowing sale of the patents to independent parties.